Software is a generic term to refer to a collection of data or executing code used by a computer to implement arithmetic operations or logical operations. Back in 1936, Allen Turing, in his landmark paper On Computable Numbers proposed the capable use of instructions (i.e. software) to execute functions through his Turing Machine, an early precursor of the general purpose computer[1]. Today the modern computer is instrumental for complex computations, data analytics, high-powered graphing, simulations, and so on. Although, the development and use of software for these computer functions has become mainstream, determining the patent eligibility of software inventions under 35 USC §101 has been less intuitive.

Typically, we think of patents as the main tool that allows for product exclusivity in the pharmaceutical industry. However, exclusivity has a regulatory component. For example, a new drug product cannot be marketed until it has undergone review and approval by the US Food and Drug Administration (FDA) or other foreign counterpart. Probably the most familiar regulatory exclusivity is the five years given upon approval of a new drug application (NDA) during which no generic drug application can be filed.[1] This regulatory exclusivity is a valuable asset, so much so in fact that it is often desirable to accelerate the drug approval process. An untapped asset that has arisen out of this framework is the priority review voucher (PRV). A helpful summary on PRVs was recently published in a piece from the Regulatory Affairs Professional Society.

Back in April, the Court of Appeals for the Federal Circuit (CAFC) handed down a split decision that breathes life into an otherwise suffocating Mayo/Alice world. This case, Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Int’l Ltd. has been contrasted and compared to the Supreme Court’s original Mayo finding, since both Mayo and Vanda related to drug dosing and involved a law of nature. However, the comparison ends there, as the underlying patent in Vanda was deemed subject matter eligible, whereas the patent in Mayo was not. The Mayo decision, in conjunction with the Alice decision of course, led to the creation of the current two-step patent eligibility test that has proven difficult to consistently apply. Three key differences likely led to the divergence between the Vanda and Mayo decisions: (i) the focus of the innovation, (ii) the actual method steps recited, and (iii) the clarity in presenting the result of the application of the method. Furthermore, the USPTO recently issued a guidance memorandum analyzing the decision.

In April, the USPTO published a memorandum that revises procedures set forth in MPEP §2106.05. The memorandum was issued in response to the Federal Circuit’s decision in Berkheimer v. HP Inc. Now that the Federal Circuit denied the request for en banc rehearing of the decision, we thought it would be a good time to offer some thoughts on the memo.

It seems like only yesterday that the United States Patent and Trademark Office (USPTO) issued U.S. Pat. No. 9,000,000 for a “windshield washer conditioner” that collects and conditions rainwater or dew from a windshield for use as washer fluid. And now we’ve surpassed 10,000,000! If patents were Wonka Bars, the millionth ones would surely include a Golden Ticket.

One technique for categorizing patents related to Fluid Catalytic Cracking is to group them in certain categories: those related to catalyst zeolite, matrix or the catalyst per se, their synthesis or crossover patents directed to additive/FCC catalyst systems; catalyst additives per se, such as metals passivation catalysts, octane additives or combustion promoters; reactor internals; regenerator internals; FCC-related process conditions, operations, and treatment of FCC feed or products; or incorporation of the FCC in a broader process, and ancillary FCC-related processes. In 2017, there was a concentration in the final category, with lighter representation in all other areas.

In Zeroclick, LLC v. Apple Inc., 2017-1267 (Fed. Cir. June 1, 2018), the Federal Circuit overruled the U.S. District Court for the Northern District of California for improperly interpreting claims regarding the application of 35 U.S.C. §112, ¶ 6. The case related to an appeal from an action where Zeroclick had sued Apple for infringement of claims 2 and 52 of U.S. Patent No. 7,818,691 (‘691 Patent) and claim 19 of U.S. Patent No. 8,549,443 (‘443 Patent). The district court had found the claims invalid as being indefinite.[1] The court had construed the claims as reciting means-plus-function elements but did not find correspondingly sufficient structure in the specification.[2]

In the world of electronics, no one has appreciated and successfully employed the importance of the integration of packaging design and engineering, like Apple. Everyone in the field of intellectual property are aware of the considerable number of utility patents owned by Apple. What they may not be as familiar with is their activity in the area of design patents. As described in the Steve Jobs biography by Walter Isaacson, this has been due in large part to the relationship between designer, Jonathan Ive, and the brilliant Steve Jobs. The book points out that in contrast to the typical engineering-driven design of products in most companies, at Apple, product and packaging design involves an iterative conversation between the designers and engineers to find elegant simplicity:

For the first time since the Mayo Supreme Court decision of 2012, the Court of Appeals for the Federal Circuit (CAFC) in Exergen vs Kaz has ruled in favor of the patent eligibility of a medical diagnostic invention. While nonprecedential, this 2-to-1 decision is noteworthy for the guidance it provides to patent professionals seeking to protect diagnostic inventions. Specifically, it instructs that diagnostic methods may be eligible for patent coverage so long as they use unconventional methods for detecting analytes. Additionally, the Exergen decision offers another endorsement of the view put forth recently by the CAFC in Berkheimer v. HP and Aatrix v. Green Shades, that the inventive concept analysis that can arise in step-2 of the Mayo/Alice test is at least in part a factual question and not just a question of law. This factual vs legal debate continues to have reverberations throughout the patent law field, affecting both the manner in which courts conduct 101 examinations as well as the conclusions they reach.

Since the start of the year, the CAFC has handed down four cases in rapid succession relating to patent subject matter eligibility – the precedential Finjan vs Blue Coat, Core Wireless vs LG electronics, and Berkheimer vs HP Inc. decisions and the non-precedential Move Inc. vs Real Estate Alliance decision. In each, the validity of patents relating to software inventions was challenged, in part on the grounds that the inventions covered abstract ideas (an ineligible subject matter under 35 U.S.C. § 101). In the first three cases released (Finjan, Core Wireless, and Move Inc.), the CAFC displayed refreshing consistency in their evaluation of the ‘abstractness’ of patents, offering a glimmer of hope that the court may finally be offering a clear path forward, in particular with regards to step one of the Alice/Mayo test. Unfortunately, that hope was dashed in Berkheimer, in which the CAFC reverted to a different procedure for evaluating the abstractness of patents. This inconsistency in the application of the Alice/Mayo test sows confusion in the patent field, and continues to make the drafting of ‘101 – resistant’ patents more difficult.